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STREET FLYERS LLC v. GEN-X SPORTS INC.

August 19, 2003

STREET FLYERS LLC, PLAINTIFF, AGAINST GEN-X SPORTS INC., DEFENDANT


The opinion of the court was delivered by: Michael Mukasey, Chief Judge, District [ Page 1]

OPINION AND ORDER

Street Flyers, LLC ("Street Flyers") sues Gen-X Sports, Inc. ("Gen-X") alleging that Gen-X's Oxygen roller shoe infringes two patents assigned to Street Flyers — a utility patent for a wheel assembly for a roller shoe and, a design patent for a wave design on a shoe. Jurisdiction is based on 28 U.S.C. § 1338(a). Gen-X moves under Fed. R. Civ. P. 56 for summary judgment of non-infringement on both patents.*fn1 For the reasons stated below, the motions are granted.

I.

A. The '964 Patent

Plaintiff Street Flyers alleges that it is the assignee of U.S. Patent No. 6,308,964 ("the '964 Patent"), which was granted on October 30, 2001, by the United States Patent and Trademark Office. (Compl. ¶ 5)

Defendant Gen-X submits a Rule 56.1 Statement setting forth certain facts relating to the '964 Patent,*fn2 and Street [ Page 2]

Flyers responds with its own Rule 56.1 Statement. However, instead of pointing to facts that are in dispute, Street Flyers admits that the facts in Gen-X's statement are undisputed.*fn3 (Street Flyers' '964 Patent 56.1 ¶ 1) Street Flyers does not cite any evidence in its Rule 56.1 Statement and has not submitted any affidavits or other evidence in opposition to Gen-X's motion for summary judgment of noninfringement.

Thus, the following facts, taken from Gen-X's Rule 56.1 Statement and attached documents, are undisputed. The '964 [ Page 3]

Patent, entitled "Wheel Assembly for a Roller Skate," claims a priority filing date of December 19, 1998, based on an application filed in Taiwan. (Gen-X's '964 Patent 56.1 ¶ 2; Snyder '964 Patent Decl. Ex. A)

The specification of the '964 Patent refers to Taiwan Utility Model Publication No. 339688 ("Taiwan publication"), which was published on September 1, 1998. (Gen-X's '964 Patent 56.1 ¶ 3; Snyder '964 Patent Decl. Ex. A at col. 1) The specification says that the Taiwan publication discloses a roller skate, with wheels that can be pivoted into storage positions in a base, so that the skate can be worn as a shoe. (Snyder '964 Patent Decl. Ex. A, col. 1) According to the '964 Patent specification, the difficulty with the Taiwan publication is that when the user skates on an inclined surface or when the wheel hits an object on the ground, the wheel seat might pivot into the storage compartment. (Id.) According to the specification, "[t]he present invention is intended to provide a wheel assembly for a roller skate that mitigates and/or obviates the above problem." (Id.)

The '964 Patent includes two independent claims. The first claim is as follows:

1. A wheel assembly for a roller skate having a base, [ Page 4]
the wheel assembly comprising:
a pivotal seat having a first end secured to the base and a second end;
a wheel seat having a first end pivotally connected to the second end of the pivotal seat by a pin and a second end;
a wheel rotatably mounted to the second end of the wheel seat, the wheel seat further including a mounting member;
a first elastic member having a first end attached to the pivotal seat and a second end attached to the mounting member of the wheel seat for biasing the wheel seat to a storage position in the base;
a stopping means including a first end mounted to the pin and a second end through which the mounting member is extended, the stopping means further including a stop; and
a second elastic member mounted around the pin, said second elastic member being adapted to bias the stop of the stopping means to a position for releasably engaging with the wheel seat to prevent the wheel seat from moving into the storage position in the base.
(Id., col. 4) The second claim is:

2. A roller skate comprising:

a base having at least two compartments, the base further having a corresponding number of shoulders defined in said at least two compartments, respectively;
a corresponding number of wheel assemblies each of which is mounted in an associated said compartment, each said wheel assembly including:
a pivotal seat having a first end secured to the base and a second end,
a wheel seat having a first end pivotally connected to the second end of the pivotal seat by a pin and a second end,
a wheel rotatably mounted to the second end of the wheel seat, the wheel seat further including a mounting member;
a first elastic member having a first end attached [ Page 5]
to the pivotal seat and a second end attached to the mounting member of the wheel seat for biasing the wheel seat into the associated compartment in the base;
a stopping means including a first end mounted to the pin and a second end through which the mounting member is extended, the stopping means further including a stop; and
a second elastic member mounted around the pin, said second elastic member being adapted to bias the stop of the stopping means to a position for releasably engaging with the wheel seat; and
an upper mounted on the top of the base;
wherein each said wheel seat is pivotable between an operative position and a storage position in the associated compartment, and wherein when each said wheel seat is in the operative position, each said wheel seat bears against an associated said shoulder while the wheel rotatably attached to each said wheel seat extends beyond the base for skating, and wherein when each said wheel assembly is in the operative position, the stop of each said stopping means is engagable with an associated said wheel seat to prevent the associated wheel seat from entering the associated compartment.
(Id., cols. 4-5)

The '964 Patent includes several drawings in its specification. Figures 1, 2, 4, and 5 are included in the appendix to this opinion as Exhibits A through C. The specification indicates the following structures correspond with the following numbers shown in the figures: pivotal seat (340), wheel seat (330), pin (341), first elastic member (332), mounting [ Page 6]

member (331), stopping means (350), stop (351), second elastic member (353).*fn4 (Id., col. 3)

1. Prosecution History

After Street Flyers filed its initial application for the '964 Patent, the Patent Office issued an "Office Action" dated July 18, 2000, rejecting all the claims of the '964 Patent. (Gen-X's '964 Patent 56.1 ¶ 16; Snyder '964 Patent Decl. Ex. B, Office Action) The patent examiner said that each of the limitations of the '964 Patent, except the stopping means, was shown in the Taiwan publication — which was disclosed in figure 7 of the application for the patent. (Gen-X's '964 Patent 56.1 ¶ 17; Snyder '964 Patent Decl. Ex. B, Office Action at 2-3) However, the patent examiner found that a stopping means was disclosed in prior art patent U.S. 5,803,469, referred to by the examiner as "Yoham." The patent examiner said: "Yoham teaches a wheel assembly with the following: a stopping means having a stop, and a second elastic member mounts around the pin in order to pivotally move a roller skate between locked position, [ Page 7]

including a lowered, operable position and a collapsed, stowed position." (Snyder '964 Patent Decl. Ex. B, Office Action at 3 (numerical references omitted)) According to the patent examiner, "it would have been obvious to a person of ordinary skill in the art to combine the wheel assembly of Yoham with the prior art, figure 7 of the invention." (Id.)

The patent examiner said also: "Functional recitations(s) using the word "for" (e.g. "for biasing the stop of the stopping means. . . .") have been given little patentable weight because they fail to add any structural limitations and are thereby regarded as intended use language." (Id.) According to the examiner, "A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim." (Id.)

On October 18, 2000, Street Flyers filed a response to the office action. (Gen-X's '964 Patent 56.1 ¶ 19; Snyder '964 Patent Decl. Ex. B, Amendment) In the response, Street Flyers amended several words in its claims. Street Flyers changed the [ Page 8]

limitation "a second elastic member mounted around the pin for biasing the stop of the stopping mean to a position" to "a second elastic member mounted around the pin, said second elastic member being adapted to bias the stop of the stopping means to a position." (Id. at 2) Street Flyers disputed the patent examiner's view regarding the language "for biasing." According to Street Flyers, "a functional limitation must be evaluated and considered, just like any other limitation of the claim." (Id. at 5) However, Street Flyers said that it had in any event amended its claim to "more particularly define the structural characteristics" of the second elastic member. According to Street Flyers, the amended claim "recites a specific adaptation of the second elastic member." (Id. at 5)

In addition, Street Flyers argued in its response that the Yoham patent did not disclose the precise stopping means arrangement of the '964 Patent. Specifically, Street Flyers' response stated: "In addition, it is to be noted that the claim [of the '964 Patent] requires that the stopping means includes a first end mounted to the above-noted pin, and a second end through which the mounting member is extended." (Id. at 6) Street Flyers said: "[I]t is self-evident that the entire wheel [ Page 9]

seat along with the above-noted stopping means is positioned in the storage position or the locked position. In this regard it is to be noted that the claims utilize the second end of the first elastic member (which is attached to the mounting member 331 of the wheel seat 330) for biasing the wheel seat 330 into the storage position in base 403." (Id.) Street Flyers' response stressed:

In the absence of any teaching of a stopping means with an end being pivotally connected to the mounting member, one skilled in the art could not possibly, in the absence of hindsight analysis, conceive of using the finger elements of Yoham and the admitted prior art to achieve the wheel seat and the stopping means to be stowed in a compartment as claimed in the present invention.*fn5
(Id. at 7)

Based on Street Flyers' response, the examiner mailed a Notice of Allowance and Detailed Action. (Gen-X's '964 Patent 56.1 ¶ 21; Snyder '964 Decl. Ex. B, Detailed Action) In the Detailed Action, the examiner stated as follows:

Regarding claim 1, the references do not disclose a [ Page 10]

wheel assembly for roller skate with the following: a pivotal seat having a first end mount to the base and a second end pivotally connected to a first end of a wheel seat by a pin; wherein the wheel seat having a second end and a mounting member; a stopping means including a first end mounted to the pin and a second end through which the mounting member is extended; a first and second elastic members; wherein the first elastic member attached to the pivotal seat and to the mounting member, and second elastic member mounted to the pin and being adapted to bias the stop to a position for releasably engaging with the wheel seat to prevent the wheel seat form [sic] moving into the storage position in the base. These structures in combination with other structures recited in claim 1 define over the prior art of record.
(Id. at 2)

2. The Oxygen Roller Shoe

Street Flyers alleges that Gen-X's Oxygen roller shoe ("Gen-X's shoe" or "Oxygen shoe") infringes the '964 Patent. Gen-X has filed a specimen of its shoe, along with several photographs showing the wheel assembly of the shoe. A copy of one of the photographs is included as Exhibit D of the appendix to this opinion. The following description of the Oxygen roller shoe is taken from Gen-X's Rule 56.1 Statement, which Street Flyers does not dispute, and this court's examination of the actual shoe.

The Oxygen roller shoe, like the object described by [ Page 11]

the '964 Patent, is a roller skate with wheels that can be pivoted into the base of the shoe. Also like the '964 Patent, the Oxygen shoe has a mechanism for securing the wheels in the skating position, so that the wheels do not unintentionally slide back into the storage compartments while the user is skating. (Oxygen Shoe)*fn6

The Oxygen shoe has two storage compartments in the base of the shoe. (Id.) Each compartment has a bracket extending from it. (Gen-X's '964 Patent 56.1 ¶ 7) A wheel seat is pivotally attached at one end of the bracket by a pin. (Id. ¶ 8) Wheels are attached to the opposite end of the wheel seat. (Id.) A torsion spring (the "first spring") has its first end fixed to the base and a second end fixed to the wheel seat, and its center coils encircling the pin. (Id. ¶ 10) The spring biases the wheel seat out of the storage compartments to the skating position. (Oxygen Shoe)

There are two buttons on the side of the Oxygen shoe. (Id.) Each button is a cylinder that extends through the sole of the shoe. (Id.) When the cylinder is pushed inward, it comes into contact with the ...


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